Old No. 7

This past week saw the good folks at Jack Daniels (or – more accurately, Jack Daniels Properties, Inc., the subsidiary of Brown-Forman which owns and manages the Jack Daniels’ trademarks and other associated intellectual property) up in arms. Apoplectic, even.

The objects of their righteous anger? Dynasty Spirits, Inc. and Bayou Distilleries, LLC, producers of several brands of whiskey marketed under names including Lonehand, Giant and Billy Banks (to name just a few).

Of course, legal team at Old No. 7 isn’t going to pursue competitors without cause. Rather, they generally keep their powder dry unless faced with a particularly egregious problem. And this is just such a case.

In a nutshell, Jack’s beef with these upstarts is that they’re stealing. More specifically, they’re stealing the goodwill associated with Jack’s intellectual property.

As detailed in the Jack Daniel’s Complaint in the United States District Court for the Northern District of California, Jack Daniels has registered trademarks covering many (most, actually) of the features of its label. But more than that, the shape of the iconic slab-sided Jack Daniels’ bottle itself is covered by a federally registered trademark. The shape of the bottle, together with the white-lettering on black label, black cap and black neck wrap closure – collectively described in the complaint as the Jack Daniels Trade Dress – are (according to JDPI) famous and inherently distinctive.

I happen to agree.

But more to the point, if the allegations in the complaint are true, it looks like perhaps Dynasty and Bayou agree as well. The defendants – in addition to using bottles, caps and closures which were remarkably similar to those of the Jack Daniels Trade Dress – went one step further with the Lonehand brand.

Lonehand is found in a square bottle bearing a black label with white script in a startlingly similar configuration to the label on Old No. 7. And what manner of hooch is the Lonehand brand? A Tennessee whiskey – just like Jack Daniels.

In fact, the Complaint alleges that not only does the Lonehand trade dress unfairly infringe on the Jack Daniels Trade Dress, but the defendants “instructed retailers to display [Lonehand] adjacent to Jack Daniels and to use promotional materials that employ elements of the Jack Daniels Trade Dress.” And at that point in the Complaint, JDPI provides a helpful example of Lonehand’s apparently preferred form of shelf display.

If this last bit is true, it is pretty egregious. It is one thing to employ design elements which might simply be reminiscent of the design of another more established product. That’s a problem, but could perhaps be excused as mistake. That sort of thing can get you a cease and desist letter but, if you’re nice about it, may not get you sued. But if you mimic a federally registered trademark and ask that your product be displayed adjacent to the product covered by the mark? Now it is starting to like you willfully and deliberately infringed on the established product’s rights. And that’s the kind of thing that gets you sued into oblivion.

JDPI is asking for a permanent injunction, destruction of all the infringing products, all profits that the defendants have obtained by selling the infringing products, treble (i.e., triple) damages because of the willful infringement, and its attorneys fees and costs in bringing the action.

Will JDPI win? Outcomes in litigation are never certain. But given the amount of firepower that JDPI can bring to the case and the apparent egregiousness of the conduct of the defendants, my sense is that if you want a bottle of Lonehand in its current packaging you should probably buy it soon. I doubt it will be on the shelves much longer.

As a final note – the complaint contains one additional nugget that may have you chuckling. The folks at JDPI say that Jack Daniel’s is the unofficial drink of choice of many celebrities, including Frank Sinatra and George Clooney. For some reason, I think George may be more of a tequila guy at this point…

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Published by Brian B. DeFoe

A business lawyer with an emphasis on assisting clients in consumer-facing industries, especially hospitality and retail. I have a keen appreciation for spirits, especially single-malt scotch whiskies (the peatier the better, please) and robust bourbons.
I live on Bainbridge Island, Washington with my wife, three sons and an ever changing menagerie. My practice is based out of Seattle.
View all posts by Brian B. DeFoe